【Unfair Competition Prevention Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that the form of the Appellee’s goods has so-called special distinctiveness and is well-known, and thus falls under the category of well-known indications of goods, etc., and since the form of the Appellant’s goods 1 and 2 is similar to that of the Appellee’s goods in such a way that is likely to create confusion with the Appellee’s products, it is judged to fall under Article 2, paragraph 1, item 1 of the Unfair Competition Prevention Act.

June 18,2024

Appellee’s goods Appellant’s goods 1 Appellant’s goods 2

Intellectual Property High Court Decision of November 9, 2023 (Case No. 10048 [Ne] 2023―Presiding Judge Miyasaka)

◆Main text of the case

【Summary of the Judgment】

1. Concerning whether the form of the Appellee’s goods falls under the category of well-known indication of goods, etc.

(1) Concerning “Special Distinctiveness”

The Appellee’s goods, in most of their models, have the following morphological features: yellow welt stitching (Form (a)), sole edge (Form (b)), heel loop (Form (c)), sole pattern (Form (d)), sloping outsole heel portion (Form (e)), rounded front part of the shoe (Form (f)), Puritan stitching (Form (g)) and eight eyelets (Form (h)), all of which are distinctive features of the form. In particular, Forms (a), (b), and (c) have distinctive features that distinguish them from other products of the same type, and they exert a strong source-distinguishing power. Furthermore, when observed as a whole in combination with forms (d) through (h), which individually are not so distinctive, the product has a remarkable feature that is not found in any other product. Therefore, the Appellee’s product, which has all the features of forms (a) through (h), is deemed to have so-called special distinctiveness.

(2) Concerning “Well-known”

The form of the Appellee’s goods, which has all the characteristics of the above forms (a) through (h), is widely recognized by consumers according to the sales period, sales channels, sales performance, advertising performance, advertising content, media article content, consumer survey results, etc. of the Appellee’s products in Japan, and is recognized as a well-known indication of goods or business.

2. Concerning Similarity of the form of the Appellee’s Goods and Appellant’s Goods 1 and 2

In determining whether or not the forms of the Appellee’s goods are similar to those of Appellant’s goods 1 and 2, a comprehensive judgment, while placing the greatest emphasis on form (a), which is the most distinctive feature of the form of the appellant’s goods, should be made taking into account the other forms.

Since the Appellant’s goods 1 has all the characteristics of the above forms (a) through (h), which are the form of the Appellee’s goods, they are considered dead copies of the Appellee’s goods, and thus differences in details do not have an effect on the determination of similarity. Therefore, it is clear that the forms of both goods are similar.

On the other hand, the Appellant’s goods 2 has, with the exception of form (c), all the features of forms (a), (b), (d) through (h) of the Appellee’s goods including form (a), which is the most distinctive feature of the Appellee’s goods. With regard to form (c), the basic form of the heel loop is common, and although the presence or absence of embroidery on the heel loops differs and the length of the heel loops is different, when considered in totality, the difference is such that consumers recognize the difference as that of design of details of different model numbers of the same series of goods, and thus both forms are similar.

3. Concerning whether Appellant’s Goods 1 and 2 are confusingly similar to the Appellee’s Goods.

In light of the well-known nature of indications of goods or business pertaining to the form of the Appellee’s goods and the similarity between the form of the Appellee’s goods and the form of the Appellant’s goods 1 and 2, the Appellant’s goods 1 and 2, when sold by the Appellant, are deemed to cause misidentification and confusion with the Appellee’s goods.

【Comments】

1. Concerning whether the form of the Appellee’s goods falls under the category of well-known indications of goods or business

(1) Concerning “Special Distinctiveness”

The premise that “the form of the product must (1) have objectively distinctive characteristics different from other similar products (special distinctiveness) and (2) have become well-known among consumers as an indication of the origin of the specific business through continuous and exclusive use and strong advertising by a specific business for a long period of time (well-known nature)” is a requirement in order for a form of a goods to fall under Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act. Based on this premise, which has been adopted in many court cases in recent years (such as Intellectual Property High Court, December 26, 2012 [Pair Loupe Case], Intellectual Property High Court, April 14, 2015 [TRIPP TRAPP Case], Intellectual Property High Court, July 27, 2016 [Edison’s Chopsticks Case], Intellectual Property High Court, February 23, 2017 [Water Pipe Case], Intellectual Property High Court, June 27, 2019 [Leg Warmer Case]), Summary 1 (1) of the judgment affirms the special distinctiveness of the form of the Appellee’s goods by having all the characteristics (a) through (h) of the above forms in accordance with the Appellee’s allegations and proofs.

(2) Concerning “Well-known”

In the Summary 1 (2) of the judgment, based on the premise of numerous court cases mentioned in (1) above, although the court has stated “the forms of (a) through (c)” in the judgment, in light of other parts of the judgment it is understood that the court affirmed that the form of the appellant’s goods which have all the characteristics of the forms (a) through (h) above are well-known as an indication of goods or business. In this regard, in relation to evidence proving a well-known nature, the reference to the publication of photographs of the Appellee’s goods in advertisements is particularly consistent with the tendency of court decisions to consider whether the form of the product itself was published and promoted in the advertisements (Intellectual Property High Court, April 14, 2015 [TRIPP TRAPP Case], Intellectual Property High Court, February 23, 2017 [Water Pipe Case], Osaka High Court, December 7, 2017 [Ink Cartridge Case]).

2. Concerning Similarity of the form of the Appellee’s Goods and Appellant’s Goods 1 and 2

In Summary 2 of the judgment applied, it is understood that the method of overall observation under the actual situation of business in judging the similarity of product, etc. indications (e.g., the Supreme Court Case, May 29, 1984 [American Football Case]) was applied in judging the similarity of product forms as well-known product, etc. indications in this case.

3. Concerning applicability of Appellant’s goods 1 and 2 to create confusion.

In Summary 3 of the judgment, it is understood that the court affirmed the applicability of Appellant’s goods 1 and 2 to create confusion in line with a court case in which the court ruled that whether or not the act is an “act creating confusion” under Article 2, Paragraph 2, Item 1 of the Unfair Competition Prevention Act should be judged comprehensively based on the degree of attention normally paid by traders and consumers of the defendant’s goods in light of the degree of public awareness, fame, and originality of the plaintiff’s indication, the degree of similarity between the plaintiff’s indication and the defendant’s indication, the degree of relevance of the plaintiff’s goods and the defendant’s goods, and the similarity for traders and consumers, and so on (Tokyo District Court, July 2, 2004 [La VOGUE Minami Aoyama Case]).

【Keywords】Form of Goods, Special Distinctiveness, Well-known, Applicability to Well-known Indications of Goods, Similarity in Goods Form, Applicability to Create Confusion, “Dr. Martens”

※ The contents of this article are intended to convey general information only and not to provide any legal advice.

Kei IIDA (Writer)

Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)

Contact information for inquiries: k_iida☆nakapat.gr.jp　(Please replace ☆ with @.)

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